Patent Community Slams USPTO’s Rush to Retire Old Software Systems Despite Patent Center Problems

“It is embarrassing that the repository for innovation in America can’t figure out basic software and is making the conscious choice to plow forward despite the fact that Patent Center is not ready.” – Gene Quinn

Patent CenterNumerous letters have been submitted to the U.S. Patent and Trademark Office (USPTO) in recent weeks regarding the Office’s decision to retire Private PAIR and EFS-Web, the two main software systems used by patent applicants, on November 8. The organizations are urging the agency to delay the transition due to numerous bugs and missing features.

Groups that have weighed in so far include the American Intellectual Property Law Association (AIPLA), the National Association of Patent Practitioners (NAPP), the Patent Center Listserv, Patent and Trademark Attorney, Agents and Applicants for Restoration and Maintenance of Integrity in Government (PTAAARMIGAN), and hundreds of individual patent professionals.

The USPTO has been conducting trainings, listening sessions, and other stakeholder events on the Patent Center for several months. According to the Patent Center webpage, the new system “has 100% of the functionality of EFS-Web, Public and Private PAIR, and is available to all users for electronic filing and management of patent applications.” But an overwhelming number of IP stakeholders don’t think it’s ready for launch, and patent professionals have told IPWatchdog that the USPTO is simply incorrect—Patent Center lacks basic functionality found in both PAIR systems and EFS-Web.

The Concerns

AIPLA, for instance, said in an October 30 letter that the new system still has numerous problems, such as “not providing all the sponsorship features found in EFS-Web that allow attorneys and their assistants to hand work back and forth” and “Usability concerns around sponsored accounts with large (100+) amounts of customer numbers.”

While AIPLA said they believe Patent Center will eventually be a good replacement for the old systems, a recent survey of the association’s membership “indicated that users were not yet comfortable with Patent Center as a full replacement of EFS-Web and Private PAIR and were having difficulties adapting to the change.” The survey found that about 88% of respondents felt Patent Center isn’t ready.

AIPLA acknowledged USPTO staff’s statements that “there is no good time to make automation changes,” but said this is a particularly bad time, being “the fourth calendar quarter when workload challenges are at a high level,” and asked that the transition be delayed.

PTAAARMIGAN was less understanding, accusing the Office in its October 16 letter of “waste, fraud, abuse, and gross mismanagement in software operations.” The letter claims that USPTO IT staff “committed various patterns of misfeasance and malfeasance in the development of the new software (called Patent Center)” and adds that “[e]vidence suggests a pattern of lying by IT staff to senior management about current status and readiness, to cover up that misfeasance.” PTAAARMIGAN asked for a delay (which by their estimate should be about one year) and also an investigation as to “why the USPTO has not implemented sound software engineering practices.”

According to the letter, the issue fee payment feature is one key example of a bug in Patent Center that can be fatal to obtaining a patent. The issues are causing waste and abuse “because applicants constantly run into Patent Center bugs and have to diagnose them and figure out work-arounds.” Contributors to the letter estimated that the cost of the software bugs will be $150 million to $450 million per year.

The NAPP told the USPTO on October 31 that “[b]ased on the rate at which bugs and instabilities have been declining and features have been implemented over the past few months, Patent Center will not be ready for at least six months.”

A letter from 137 IP professionals submitted to the Office of Management and Budget’s Office of Information and Regulatory Affairs (OIRA) on October 9 estimated the “economic effect because of the PTO’s software bugs could well be in the range of $1 billion per year.” That letter asks OIRA to remind the Office that it “may not impose a burden of this magnitude without an [Information Collection regulation] ICR clearance” and that the new system should be delayed until a clearance is obtained after full public comment.

In a November 1 follow-up to that letter and another, 82 patent professionals again requested the OIRA intervene and claimed new facts that have arisen “raise the possibility that the agency may have given you materially false information, and confirm that the nine-figure estimate we gave you in an earlier letter is likely correct.” The assertion about materially false information was based in part on the outcome of a meeting between the USPTO and patent practitioners detailed in blog posts by Carl Oppedahl of the Patent Center listserv.

Oppedahl has authored numerous posts about the situation, and also filed a letter on behalf of 178 members of the listserv. The letter explains that there are more than 80 “failure reports” presently outstanding relating to bugs with the system but that the USPTO has categorized these as “feature requests” and has failed to act on most.

In his latest blog, Oppedahl recounted an October 18 face-to-face meeting with USPTO staff about Patent Center that he describes as having gone badly, to say the least. According to the post, Commissioner for Patents Vaishali Udupa hijacked the meeting with a last-minute slide presentation and resisted allowing the listserv’s slides to be presented. Oppedahl also said Udupa claimed AIPLA was now on board with the launch, but this was subsequently proven to be false.

One in-house managing patent attorney who spoke to IPWatchdog about the Patent Center launch reiterated AIPLA’s concerns with the sponsorship features. The attorney said that, as of two weeks ago, a sponsored user was not able to submit corrected application data sheets (ADSs), E-Terminal Disclaimers, or Quick Path Information Disclosure Sheets (QPIDS) requests in Patent Center like they have been able to under EFS-Web. It also does not seem like a sponsored user is provided any option of being able to start/generate an e-petition in Patent Center as they were under the old system.

According to the Patent Center FAQs, Practitioner Support users “can prepare Web 85b submissions, but will need the Practitioner’s signature to submit.” The FAQ continues:

“In accordance with MPEP 37 CFR 1.4(d)(4), only registered patent practitioners and pro se inventors may sign correspondence. These include ePetitions, eTerminal Disclaimer, micro-entity certification forms, and other web forms, which allow for signing by S-signature. As such, Practitioner Support users are unable to enter the s-signature on behalf of patent practitioners.”

And the “What’s new” section of the Patent Center webpage includes a September 2023 update indicating that, while Practitioner Support users will be able to prepare eTerminal Disclaimer and Corrected ADSs for the practitioner, the practitioner must sign and submit them. But, at least as of two weeks ago, based on information IPWatchdog has received, this update seems to be erroneous.

USPTO Response

Despite the many comments and concerns, it seems this week’s launch is a done deal. A USPTO spokesperson told IPWatchdog that the Office “values all stakeholders’ feedback,” and that it will continue to work with users:

“Our goal is to provide high quality service to all who do business with us. Since its launch in 2017, Patent Center has been rigorously user-tested, and we have made many improvements based on public feedback. We are never done listening, and continue to welcome customer feedback as we retire the legacy EFS-Web and Private PAIR system in favor of modern technology that is more capable of meeting the evolving needs of our stakeholders.

We realize a move to any new technology requires our customers to learn a new system and, to the extent they have built systems around our old technology, to update their own systems.  We are doing all we can to support them in those endeavors including offering extensive training, and we continue to stand ready to assist all those who need it.”

‘Embarrassing’

IPWatchdog CEO and Founder Gene Quinn said this is just the latest example in a long history of computing resources offered by the USPTO “being substandard and unacceptable.” Quinn explained:

“Indeed, if there were private sector competition possible, the USPTO would have gone out of business long ago because of antiquated, inadequate, and extremely buggy frontline software. Of course, the USPTO has a monopoly and doesn’t need to provide user friendly, or even user acceptable or user usable software systems, and they typically don’t. Over a number of years, however, the Office managed to turn the much-maligned early version of EFS-Web into something that was at least acceptable, and usable for its intended purpose. So, why would the choice be made to retire EFS-Web and PAIR rather than continue to improve what finally became a workable solution?

By forcing Patent Center onto the community before it is ready, the Office is consciously choosing to start over by taking a step backwards. The problems and bugs facing Patent Center are well-known, with both AIPLA and NAPP urging the USPTO to slow down and stand down from retiring EFS-Web and PAIR until such time that Patent Center can actually function without long stretches of down time and without capacity issues. It is embarrassing that the repository for innovation in America can’t figure out basic software and is making the conscious choice to plow forward despite the fact that Patent Center is not ready and does not reliably work for its intended purpose. The patent community deserves better—much better.”

Corrections:

This article was updated on Monday, November 6, to clarify that the following paragraph was attributable to PTAAARMIGAN’s letter, not NAPP’s.
“According to the letter, the issue fee payment feature is one key example of a bug in Patent Center that can be fatal to obtaining a patent. The issues are causing waste and abuse “because applicants constantly run into Patent Center bugs and have to diagnose them and figure out work-arounds.” Contributors to the letter estimated that the cost of the software bugs will be $150 million to $450 million per year.”

The transition to Patent Center will take effect as of Wednesday, November 8.

Image Source: Deposit Photos
Author: alexmillos
Image ID: 28017453 

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Join the Discussion

21 comments so far.

  • [Avatar for Anon]
    Anon
    November 17, 2023 11:36 am

    Mr. Adams,

    Well goodness for small favors in that you are not the person that I thought you to be.

    Notwithstanding that, your proclivity for “I don’t have a problem, so there is no problem” does not speak highly of your being connected to the legal environment, as others (including the reputable David Boundy) have been VERY ACTIVE in highlighting problems with the USPTO software AND system of implementing their desires. May I recommend you visit Antlike Persistence, join a connected listserv or at least pay some attention outside of your day to day activities prior to your declarations of “no problems,” accompanied by ad hominem put downs of those that simply know better than you?

  • [Avatar for John Adams]
    John Adams
    November 13, 2023 10:11 am

    Anon, I have no idea who you think I am. This was my first post here and I’m plenty anti PTO when it makes sense.

    But Patent Center is fine. Is it Google/Apple iOS level of technical impressiveness? No. But we’ve been using it in our office for almost this entire year and had no issues.

    EFS is like a time travel back to MySpace. I can’t believe people would *want* to use it.

  • [Avatar for Anon]
    Anon
    November 9, 2023 09:06 am

    “Mr. John Adams,” (a pseudonym of historical proportions, with a pro-Patent Office bent — gee, where have I seen this before?),

    I do have to wonder, what – exactly – is your “use,” as the very real problems related to prosecution would – and should – cause concern for practitioners, and clearly would not be labeled ‘whining’ or ‘luddites’ by any reasonable person.

  • [Avatar for John Adams]
    John Adams
    November 8, 2023 03:02 pm

    Been using Patent Center nonstop. Zero issues. Never took patent attorneys for such a bunch of Luddite whiners.

  • [Avatar for Anon]
    Anon
    November 7, 2023 04:03 pm

    Miss Burke,

    I commend your continued vigilance.

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    November 7, 2023 03:52 pm

    The USPTO just put out an alert that they are postponing the transition – article to come.

  • [Avatar for Confused]
    Confused
    November 7, 2023 03:19 pm

    I don’t know, the Final Reminder at the Patent Center page says, “FINAL REMINDER: The USPTO is retiring EFS-Web and Private PAIR, effective November 15, 2023. Please use Patent Center to file and manage your applications and requests. Visit the EFS-Web and Private PAIR Retirement and Patent Center information pages for more information.”

    But the EFS-Web and Private PAIR Retirement information page says November 8, 2023…

  • [Avatar for Julie Burke]
    Julie Burke
    November 7, 2023 01:52 pm

    Pete Moss’s nod towards CNIPA is notable. Not only is the USPTO making it difficult for US inventors to file for patents, America’s InNOvation Agency continues to hastily issue patents to Chinese entities for some pretty scary technology.

    See US Patent No 11,796,292 issued Oct 24, 2023 to Jiangsu University, entitled Intelligent Multi-Robot Rescue Thrower and Control Method thereof.

    The USPTO issued a first action allowance for this PPH-expedited application, originally allowed by CNIPA, following an abbreviated six week exam.

    The intelligent “rescue” thrower structure is provided with flight control module, visual module, a laser radar, battery, a projectile head, increased airborne time, intelligently identified fall point and reduced energy loss while achieving fall point tracking purpose, all to be used by military and police forces for “rescue,” by dropping a “fire fighting bomb.” See Abstract and first page of Specification.

    Another reason why America needs House Bill 5475, Prohibiting Adversarial Patents Act passed, and soon.

  • [Avatar for PeteMoss]
    PeteMoss
    November 7, 2023 10:44 am

    I attended the Getting Started with Patent Public Search seminar presented by the USPTO. I asked (i) why do I keep getting kicked off the search platform after about 1 minute of searching, and (ii) when will the problem be fixed? The TEAMS chat response was a suggestion to wait a few minutes after being kicked out of the system and try again. No bueno. I am US patent practitioner, but I have to use ESPACENET to search US patents & publications.

    A February 2023 WSJ article mentions that China is using its courts and administrative agencies to invalidate or restrict patents in the fields of technology, rare Earth elements and pharmaceuticals. Maybe the US thinks China has the right idea and is making patenting more difficult on purpose. https://www.wsj.com/articles/u-s-china-technology-disputes-intellectual-property-europe-e749a72e

  • [Avatar for patexam327]
    patexam327
    November 6, 2023 10:56 am

    To reiterate Examiner X below:

    The Examiners have had months now of almost daily failures of basic search and office action generating software. As in, our whole job depends on unreliable software. So good luck, unfortunately, to Applicants and attorneys on the other side. The evidence is that PTO either can’t or won’t fix these things.

  • [Avatar for Dan Feigelson]
    Dan Feigelson
    November 6, 2023 08:28 am

    To paraphrase Lily Tomlin’s Ernestine, “We don’t care. We don’t have to. We’re the USPTO.”

    And the worst of it is that if a practitioner lies to the PTO, he can be disbarred, but when Kathi Vidal et al. lie to the public and the OMB about Patent Center, repeatedly and in some at least one case continuously, that’s ok.

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    November 6, 2023 08:11 am

    Hi Julie – yes, it’s Nov 8 – I’ve updated that to “this week’s launch” and noted the clarification at the bottom of the article.

  • [Avatar for Examiner X]
    Examiner X
    November 6, 2023 07:01 am

    Now the practitioners will know what the examiners have been dealing with. Examiners have had near daily issues with their software for months.

  • [Avatar for Lost In Norway]
    Lost In Norway
    November 6, 2023 05:27 am

    I agree with Pro Say. The best practice to last minute filings is dead tree format. The idea that I’m depending on a buggy USPTO system is enough to scare the water out of me.

  • [Avatar for Karen King]
    Karen King
    November 6, 2023 12:16 am

    Excellent article! It is incredible that the USPTO has been unwilling and seemingly uninterested in taking the criticism and concerns of patent attorneys, agents, paralegals, and inventors, and professional organizations about Patent Center seriously! I am an experienced US patent attorney and member of AIPLA and the Patent Center liserv.

  • [Avatar for Richard Schafer]
    Richard Schafer
    November 5, 2023 11:06 pm

    As far as we know, the shutdown of EFS-Web and Private PAIR is scheduled for the end of the day on November 7, which is being understood as 11:59 pm EDT.

  • [Avatar for David Boundy]
    David Boundy
    November 5, 2023 08:17 pm

    Dear Pro Say —

    > The facts and grounds are unassailable.

    I know multiple solid grounds for suit for the PTO’s DOCX fiasco.

    Unfortunately, I don’t know of sue-able law for Patent Center (all I can think of is Federal Tort Claims Act, but the FTCA is only money damages after the harm is done. FTCA does not provide an injunctive remedy to prevent future torts). Whattaya thinkin’? Please email me offline.

    David

  • [Avatar for Randall S. Svihla]
    Randall S. Svihla
    November 5, 2023 08:00 pm

    The shutdown will be after 11:59 p.m. on Tuesday, November 7, 2023.

  • [Avatar for David Boundy]
    David Boundy
    November 5, 2023 07:26 pm

    The USPTO’s spokesperson’s comments demonstrate the process problems. They range from irrelevant to brazen falsehood.

    Note that the two things that the spokesperson didn’t say are the two things that matter—(a) reliability of Patent Center has been assessed using metrics that matter to users, and (b) Patent Center is reliable on those metrics. The spokesperson didn’t mention either, because neither is true.

    > Our goal is to provide high quality service to all who do business with us.

    Actions speak louder than words. The PTO’s actual revealed preference goals have nothing to do with high-quality service. I don’t know what those goals are. The USPTO hasn’t disclosed them, nor has the USPTO disclosed its metrics by which the USPTO measures “quality.” Whatever the USPTO’s undisclosed “goals” are, they are not congruent with users’ goals.

    > Since its launch in 2017, Patent Center has been rigorously user-tested

    Baloney three times.

    First, the USPTO’s testing is far below amateur—every week the PTO introduces new bugs (as noted in the November 1 letter, https://ssrn.com/abstract=4620375 ) Agile methods require a development process with more rigor in its validation and testing processes. The USPTO has dialed them down.

    Second, the Information Quality Act applies to the USPTO’s “testing.” The USPTO undertook certain commitments to rely on quality information, not junk science, https://www.uspto.gov/learning-and-resources/information-quality-guidelines The USPTO’s testing is entirely black box, not reproducible, not objective, and the metrics have no utility (that is, whatever metrics the USPTO is testing, they’re the wrong ones), and whatever statistical methods the USTPO may be using, they fail the USPTO’s legally-binding commitments. It’s testing on the metrics that matter to users that matter, not metrics that matter to the USPTO’s developers. Whatever “testing” the USPTO claims to have done, it’s asking the wrong questions.

    Third, testing is irrelevant, if testing doesn’t influence decision-making. The USPTO spokesperson made no representation of any relationship between testing and agency action, and none is apparent to us in the public.

    > and we have made many improvements based on public feedback

    A positive past first derivative in the past does not mean that present level is above zero. One is irrelevant to the other.

    > We are never done listening,

    The USPTO’s statement is objectively false. Look at Carl’s report of his October 18 meeting, at https://blog.oppedahl.com/the-in-person-meeting-at-the-uspto-on-october-18-about-patent-center Carl and Richard flew from Colorado and Texas to present information. Commissioner Udupa began by preventing them from saying much of anything, and instead did all the talking. Commissioner Udupa made it abundantly clear that “listening” was absolutely and completely past tense.

  • [Avatar for Pro Say]
    Pro Say
    November 5, 2023 05:31 pm

    The time for talk is over. PTO leadership doesn’t give a d.a.m.n.

    Time for them to yet again to be sued. The facts and grounds are unassailable.

    Just let me know to which law firm to sent my support check to.

    . . . and if this isn’t changed, the PTO better get ready to be buried in actual, physical, mailed paperwork (time to hire more — multiples more — mail processing folks).

    Ahhh . . . nothing quite like unnecessarily chopping down thousands more trees for all the paper that’s going to be wasted . . . because PTO leadership won’t do the right thing by delaying the shutdown of the system-that-works-best.

  • [Avatar for Julie Burke]
    Julie Burke
    November 5, 2023 03:05 pm

    Accurate summary of the grim situation. To be clear, is the launch scheduled for November 8 or for tomorrow, November 6?

    Under the section entitled USPTO Response, is there a typo in they sentence: “Despite the many comments and concerns, it seems tomorrow’s launch is a done deal.’

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